This is the second presentation in IP North West's seminar on IP law on 12 Oct 2011. This talk was presented by patent agent, Tom Hutchinson, principal of Hutchinson IP. In his talk, Tom considers "What is IP", "Why it is important?", "Types of IP", "Patent Attorneys" and "Tom's Top Tips". Tom is particularly well qualified to talk to FabLab because he researched additive manufacturing technology before he became a patent agent.
4. Types of IP
Copyright Other
Know-how
Dance & mime
Trade secrets Reputation
Photographs Inside knowledge
Music
Literature Films
One-off
Slogans products Inventions
Graphics Patents
Trade
names Product
Applications for
appearance
Concepts new discoveries
Get-up
Packaging
Improvements to products
Goodwill or processes
Trade marks Designs
5. Why use IP?
To prevent others from copying your ideas
To have something tangible to sell/license
To reassure investors
To block competitors
To “muddy the waters”
6. When to use IP?
If the IP is valuable and if its value
outweighs the cost of obtaining and
enforcing it
7. IP costs
Obtaining
Patents - £3k - £10k, per country
Designs - £600, per country
Trade marks - £900, per country
Maintaining
Patents - £100 - £1000, per year
Designs - £50 - £200, per year
Trade marks - £50 - £500, per year
Enforcing
A quick “spat” - £1,000, per side
At the IPO - £10,000, per side
In court - £50,000 - £500,000, per side
8. When not to use IP
Just because you can
If the value of the market or the profitability of
the product is too small
If you do not have the means to enforce it
9. Patents
A patent is a fixed-term monopoly given by the
government to inventors on new, non-obvious and
useful technologies in exchange for a complete
public disclosure of how the invention works
10.
11. Patentability
A patent may be granted only for an invention in
respect of which the following conditions are
satisfied, that is to say-
(a) the invention is new
(b) it involves an inventive step
(c) it is capable of industrial application
(d)the grant of a patent is not excluded…
15. What is a patent attorney?
Someone with a technical background and training
and qualifications in substantive IP law
Experience in acting before the IPOs and the
Courts and with other legal/technical/business
advisors
18. Patent searching
Up to 40% of UK research is wasted
Nearly all patents that have been granted in the last
100 years are available to the public
Mostly free of charge
Mostly on-line
Patents are classified to make them easier to search
Have you referenced any patent specifications in your
most recent literature review?
Are you currently re-inventing the wheel?
The two main functions of a patent are therefore; monopoly and public noticeMonopolyIncentive to invent – enables the cost of R&D to be recovered and encourages technological progressPublic noticeAfter the monopoly term has expired, the public are free to use the inventionDTI estimates that up to 40% of UK research is “wasted” on re-inventing already patented technology
“2(1) An invention shall be taken to be new if it does not form part of the state of the art.”“2(2) The state of the art in the case of an invention shall be taken to comprise any matter (whether a product or process, information about either or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way.”§2 Patents Act 1977Absolute, worldwide novelty.Disclosure of the invention in any way, anywhere in the world before the priority date is novelty destroying.“An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art.”An invention is taken to be capable of industrial application if it can be used in any kind of industry, including agricultureThe invention must work and have some usePrecludes perpetual motion machines and mere conceptsMethods of treatment of the human / animal body by surgery, therapy or diagnosis are deemed to be incapable of industrial applicationHowever, drugs or apparatus used for surgery, therapy or diagnosis may be patentableBut, what about contraceptives and cosmetic treatments?Discoveries, scientific theories or mathematical methodsLiterary, dramatic, musical or artistic works or any other aesthetic creations whatsoeverSchemes, rules or methods for performing mental acts, playing games or doing business Computer programsThe presentation of informationInventions that are contrary to public policy or morality
Inventiveness is independent of commercial successHaberman v Jackel (1999) Non-leaking training cupIf there has been a “long-felt want”, then this can point towards inventivenessProblem-solutionThe requirement is for an inventive step - not an inventive leap
The claims define the scope of the patentThey must be supported by the descriptionThe dependent claims are “fallback positions”